DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-15 in the reply filed on March 12, 2026 is acknowledged.
Claims 16-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on March 12, 2026.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on June 20, 2023 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the Office.
The information disclosure statement (IDS) submitted on May 22, 2024 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the Office.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-5 and 11-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhou et al. (US20170327734, hereinafter referred to as “Zhou”).
As to Claim 1: Zhou teaches a method of treating subterranean formation (Abstract) and method of preparing a composition for treatment of subterranean formation ([0057]), said composition comprising water ([0068]) and a crosslinked viscosifier polymer formed from comonomers. Zhou further teaches an exemplary copolymer comprising 2-acrylamido-2-methylpropanesulfonic acid (AMPS) (i.e., a monomer as defined within the instant specification [0085]), methylenebisacrylamide (MBAM) (i.e., a thermally unstable crosslinker as defined within the instant specification [0102]), and pentaerythritol allyl ether (PAE) (i.e., a thermally stable crosslinker as defined within the instant specification [103]) ([0131]). Zhou further teaches wherein the fluid comprising the crosslinked viscosifier polymer is pumped downhole and recirculated from the wellbore ([0110]-[0111]) (i.e., displacing a fluid disposed in a wellbore).
As to Claim 2: Zhou teaches the method of claim 1 (supra).
Zhou further teaches an exemplary copolymer comprising 2-acrylamido-2-methylpropanesulfonic acid (AMPS) ([0131]).
As to Claim 3: Zhou teaches the method of claim 2 (supra).
Zhou further teaches an exemplary copolymer comprising methylenebisacrylamide (MBAM) ([0131]).
As to Claim 4: Zhou teaches the method of claim 2 (supra).
Zhou further teaches an exemplary copolymer comprising pentaerythritol allyl ether (PAE) ([0131]).
As to Claim 5: Zhou teaches the method of claim 2 (supra).
Zhou further teaches an exemplary copolymer comprising 2-acrylamido-2-methylpropanesulfonic acid (AMPS), methylenebisacrylamide (MBAM), and pentaerythritol allyl ether (PAE), wherein MBAM is present in an amount of 1 mol% ([0131]).
As to Claim 11: Zhou teaches the method of claim 1 (supra).
Zhou further teaches an exemplary copolymer comprising 2-acrylamido-2-methylpropanesulfonic acid (AMPS), methylenebisacrylamide (MBAM), and pentaerythritol allyl ether (PAE), and further comprising N-vinylpyrrolidone in an amount of, inter alia, 50:50 relative to AMPS ([0131]).
As to Claim 12: Zhou teaches the method of claim 11 (supra).
Zhou further teaches an exemplary copolymer comprising 2-acrylamido-2-methylpropanesulfonic acid (AMPS), methylenebisacrylamide (MBAM), and pentaerythritol allyl ether (PAE), and further comprising N-vinylpyrrolidone in an amount of, inter alia, 50:50 relative to AMPS, and wherein MBAM is present in an amount of 1 mol% ([0131]).
As to Claim 13: Zhou teaches the method of claim 1 (supra).
Zhou teaches an exemplary copolymer comprising 2-acrylamido-2-methylpropanesulfonic acid (AMPS), methylenebisacrylamide (MBAM), and pentaerythritol allyl ether (PAE), and further comprising N-vinylpyrrolidone in an amount of, inter alia, 50:50 relative to AMPS ([0131]). Zhou further contemplates N-vinylpyrrolidone amongst a limited group of comonomers for copolymerization with AMPS including acrylamide ([0080]). A person having ordinary skill in the art would reasonably at once envisage the exemplary copolymer of Zhou ([0131]) comprising acrylamide as an alternative comonomer to N-vinylpyrrolidone, thus reading on the claimed range. It is also noted that Zhou also broadly contemplates an overlapping amount of acrylamide relative to, e.g., AMPS (see [0080]).
As to Claim 14: Zhou teaches the method of claim 13 (supra).
Zhou teaches an exemplary copolymer comprising 2-acrylamido-2-methylpropanesulfonic acid (AMPS), methylenebisacrylamide (MBAM), and pentaerythritol allyl ether (PAE), and further comprising N-vinylpyrrolidone in an amount of, inter alia, 50:50 relative to AMPS, and wherein MBAM is present in an amount of 1 mol% ([0131]). Zhou further contemplates N-vinylpyrrolidone amongst a limited group of comonomers for copolymerization with AMPS including acrylamide ([0080]). A person having ordinary skill in the art would reasonably at once envisage the exemplary copolymer of Zhou ([0131]) comprising acrylamide as an alternative comonomer to N-vinylpyrrolidone, thus reading on the claimed range. It is also noted that Zhou also broadly contemplates an overlapping amount of acrylamide relative to, e.g., AMPS (see [0080]).
As to Claim 15: Zhou teaches the method of claim 1 (supra).
Zhou is silent towards the polymer entanglement concentration (P*) of the copolymer.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. entanglement concentration, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 6, 9, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Zhou et al. (Zhou et al. (US20170327734, hereinafter referred to as “Zhou”) in view of Zhou et al. (US20150000985, hereinafter referred to as “’985”).
As to Claim 6: Zhou teaches the method of claim 1 (see above).
Zhou teaches that the composition may comprise a crosslinker including vinyl ethers of polyglycol ([0084]) (i.e., a genus including the claimed triethylene glycol divinyl ether), but does not explicitly teach the species triethylene glycol divinyl ether.
‘985 teaches a related crosslinked polymer control additive for well treatment wherein the crosslinked polymer may have a crosslinker chosen from one or blends of crosslinkers chosen from the group comprising pentaerythritol allyl ether (PAE) and triethylene glycol divinyl ether ([0020]). Zhou and ‘985 are considered analogous art because they are directed towards the same field of endeavor, namely, crosslinked polymer additives for well treatment applications. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to select triethylene glycol divinyl ether as an alternative to the PAE crosslinker of Zhou or as the species of vinyl ethers of polyglycol contemplated by Zhou (see, e.g., [0084]) and the motivation would have been that ‘985 teaches that such a structure is known within the art as a crosslinker recognized within the art as suitable for crosslinking polymers for well treatment applications. It has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination — see MPEP 2144.07. Moreover, ‘985 contemplates that crosslinkers, including triethylene glycol divinyl ether may be used in an amount of 0.1 to 3 mol% ([0022]), which overlaps with the claimed range. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as ‘985 suggests, that the overlapping portion is a usable range for an amount of a crosslinker such as triethylene glycol divinyl ether for crosslinking polymers for well treatment applications.
As to Claim 9: Zhou teaches the method of claim 1 (see above).
Zhou teaches an exemplary copolymer comprising 2-acrylamido-2-methylpropanesulfonic acid (AMPS), methylenebisacrylamide (MBAM), and pentaerythritol allyl ether (PAE), and further comprising N-vinylpyrrolidone in an amount of, inter alia, 50:50 relative to AMPS ([0131]). Zhou further contemplates N-vinylpyrrolidone amongst a limited group of comonomers for copolymerization with AMPS including acrylamide ([0080]). A person having ordinary skill in the art would reasonably at once envisage the exemplary copolymer of Zhou ([0131]) comprising acrylamide as an alternative comonomer to N-vinylpyrrolidone, thus reading on the claimed range. It is also noted that Zhou also broadly contemplates an overlapping amount of acrylamide relative to, e.g., AMPS (see [0080]).
Zhou further teaches that the composition may comprise a crosslinker including vinyl ethers of polyglycol ([0084]) (i.e., a genus including the claimed triethylene glycol divinyl ether), but does not explicitly teach the species triethylene glycol divinyl ether.
‘985 teaches a related crosslinked polymer control additive for well treatment wherein the crosslinked polymer may have a crosslinker chosen from one or blends of crosslinkers chosen from the group comprising pentaerythritol allyl ether (PAE) and triethylene glycol divinyl ether ([0020]). Zhou and ‘985 are considered analogous art because they are directed towards the same field of endeavor, namely, crosslinked polymer additives for well treatment applications. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to select triethylene glycol divinyl ether as an alternative to the PAE crosslinker of Zhou or as the species of vinyl ethers of polyglycol contemplated by Zhou (see, e.g., [0084]) and the motivation would have been that ‘985 teaches that such a structure is known within the art as a crosslinker recognized within the art as suitable for crosslinking polymers for well treatment applications. It has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination — see MPEP 2144.07. Moreover, ‘985 contemplates that crosslinkers, including triethylene glycol divinyl ether may be used in an amount of 0.1 to 3 mol% ([0022]), which overlaps with the claimed range. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as ‘985 suggests, that the overlapping portion is a usable range for an amount of a crosslinker such as triethylene glycol divinyl ether for crosslinking polymers for well treatment applications.
As to Claim 10: Zhou teaches the method of claim 9 (supra).
Zhou further teaches an exemplary copolymer comprising 2-acrylamido-2-methylpropanesulfonic acid (AMPS), methylenebisacrylamide (MBAM), and pentaerythritol allyl ether (PAE), wherein MBAM is present in an amount of 1 mol% ([0131]).
Claims 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Zhou et al. (Zhou et al. (US20170327734, hereinafter referred to as “Zhou”) in view of Zhou et al. (US20190127627, hereinafter referred to as “’627”).
As to Claim 7: Zhou teaches the method of claim 1 (see above).
Zhou is silent towards wherein the composition comprises triallyl isocyanurate in the claimed amount.
‘627 teaches a related method of forming a treatment fluid for use in subterranean formations and wells (Abstract) wherein said crosslinked polymer may be based on, inter alia, N-vinyl lactams (i.e., N-vinyl pyrrolidone, [0021]), crosslinked with a monomers including 1,3,5-triallyl-1,3,5-triazine-2,4,6(1H,3H,5H)-trione, the structure of which is construed to read on the claimed triallyl isocyanurate.
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‘627 and Zhou are considered analogous art because they are both directed towards methods of forming treatment fluids for use in subterranean formations and wells. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to select 1,3,5-triallyl-1,3,5-triazine-2,4,6(1H,3H,5H)-trione, the structure of which is construed to read on the claimed triallyl isocyanurate, as a crosslinker for the crosslinked polymer of Zhou and the motivation would have been that ‘627 teaches that such a structure is known within the art as a crosslinker recognized within the art as suitable for crosslinking polymers for well treatment applications. It has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination — see MPEP 2144.07. Moreover, ‘627 contemplates that crosslinkers, including 1,3,5-triallyl-1,3,5-triazine-2,4,6(1H,3H,5H)-trione may be used in an amount of 0.1 to 3 mol% ([0025]), which overlaps with the claimed range. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as ‘627 suggests, that the overlapping portion is a usable range for an amount of a crosslinker such as 1,3,5-triallyl-1,3,5-triazine-2,4,6(1H,3H,5H)-trione for crosslinking polymers for well treatment applications.
As to Claim 8: Zhou teaches the method of claim 1 (supra).
Zhou further teaches an exemplary copolymer wherein MBAM is present in an amount of 1 mol% ([0131]). Zhou teaches that additional crosslinkers may be used in addition to methylenebisacrylamide ([0060]).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CULLEN L. G. DAVIDSON IV whose telephone number is (703)756-1073. The examiner can normally be reached M-F 9:30-6:00.
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/C.L.G.D./ Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
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